Intellectual Property and Sport: Some Aspects and Tips for World Intellectual Property Day

The World Intellectual Property Day takes place every year on April 26th.

The 2019 edition is dedicated to the sport.

© WIPO – We recommend reading the excellent special issue of WIPO Magazine (wipo.int)

The birth of a star. Counterfeiting and cybersquatting are measured against the popularity of athletes and brands concerned. An example perfectly illustrates this reality: just a few days after the success of Kylian Mbappé at the 2018 FIFA World Cup in Russia, the name “Mbappé” was the subject of more than 150 trademark applications in China, in both Chinese and French (Shi Futian, “Companies play Mbappe name game”, ChinaDaily.com.cn, 2018-07-17). The emergence of an athlete coincides with that of the brand that designates him, whether his official name or a pseudonym. To limit the cases of abusive trademark applications and abusive registration of domain names, an first audit should be conducted to optimize its intellectual property portfolio at the right time: before the athlete has gained value in the eyes of experts in his/her specialty and the media (for illustrative purposes, see D2006-0524, D. Ronaldo de Assis Moreira v. Eladio Garcia Quintas, 14 of Julio of 2006, ronaldinho.com).

Sporting goods are among the most counterfeited. Earlier this year, in the United States, a man pleaded guilty to selling counterfeit goods including the “Nike”, “Adidas” and “North Face” brands (Justice.gov, 2019-03 -12). In January 2019, Adidas obtained from a Florida court, in a default judgment, the transfer of 196 domain names that corresponded to commercial sites offering counterfeit Adidas and Reebok products. The court also issued a permanent injunction and sentenced each defendant to pay Adidas more than $ 1 million (Adidas AG v. 2017Yeezy.com et al., No. 18-cv-62636-BLOOM / Valle). Each edition of our monthly press review includes similar examples. Counterfeit goods are most often offered for sale on online marketplaces. These are essentially marketplaces, including Alibaba, Amazon, Taobao, iOffer.com, Mercadolibre, Vkontakte.com or Shopee (to mention a few). However, we are seeing a resurgence of counterfeiting on social networks, mainly on Facebook and Instagram. Moreover, manufacturers who are not engaged in an economic model exclusively based on counterfeiting are called to the utmost vigilance. Indeed, by way of illustration, the Paris Court of Appeal recently condemned a French manufacturer for infringing the All Blacks trademark (Iptwins.com, October 5, 2018).

Cybersquatting. Cybersquatting cases in relation to the sports industry are endless. Cybersquatting not only strikes manufacturers/sponsors (DIE2015-0001, Nike, Inc. v. Stocktrade Limited, March 17, 2015, nike.ie, D2016-2181, LACOSTE and LACOSTE ALLIGATOR SA v. Domain Manager, December 20, 2016, lacoste.feedback; DCN-1500618, SALOMON SAS v. 杭州 爱 名 网络 有限公司 / 林 成 业, June 3, 2015, salomon.cn), but also distributors (D2018-2802, Foot Locker Retail, Inc. v. Chen Zhi (陈 挚), January 28, 2019, footlocker.pro), athletes (eg, D2000-1673, Serena Williams and Venus Williams v. Eileen White Byrne and Allgolfconsultancy, January 30, 2001, venusandserenawilliams.com, venusandserenawilliams.net and venusandserenawilliams.org) or fitness clubs (DCO2010-0007, LA Fitness International, LLC v. Isaac Goldstein, September 15, 2010, lafitness.co). The selected examples concern domain names that do not just mimic brands but reproduce them identically. These are not cases of typosquatting, but many cases of cybersquatting stricto sensu. Furthermore, there is a revival of cybersquatting due to the liberalization of domain name registration conditions under certain geographical extensions and the emergence of new generic extensions. The following cases concern cybersquatting cases where the domain name reproduces trademarks in the field of football:

D2014-1222, The Football Association Premier League Limited v. c/o Woistrustee.com Limited / Domain Administrator, Beyond the Dot, September 22, 2014premierleague.club
D2014-2037, Real Madrid Club de Futbol v. Manuel Mateo Peñalver, January 6, 2015realmadrid.website
D2015-0607, Real Madrid Club de Futbol v. Ali Syahmi, May 25, 2015realmadrid.science
D2016-0190, Real Madrid Club de Futbol v. Clifford Graham, March 10, 2016realmadrid.buzz
D2016-0191, Real Madrid Club de Futbol v. Wei Ding, March 10, 2016realmadrid.london
D2016-2317, AFC Ajax N.V. v. Alexander Nijeboer, Kleine Bloem B.V., 12 januari 2017ajax.football
D2017-2006, Real Madrid Club de Futbol v. Vladimir Tamasi, December 27, 2017realmadrid.gift
D2018-0006, Paris Saint-Germain Football c. Andres Vallverde Garcia, 2 de marzo de 2018parissaintgermain.group
D2018-0380, Madrid Club de Futbol v. 深圳市弗 兰 广告装 饰 有限公司 , April 17, 2018 realmadrid.vip

It is advisable, in particular, to register or at least monitor geographic Top-level-domains (see our article: Iptwins.com, Nov. 25, 2018) and Top-level-domains related to sports activities (eg. FITNESS., .FIT, FOOTBALL, .HOOKEY, .PLAY, .RUGBY, .RUN, .SOCCER, .SPORT, .SURF, .TENNIS, .TICKETS, .YOGA). In addition, it is worth remembering that the .UK opens its eligibility conditions on June 25, 2019 (Iptwins.com, April 4, 2019).

Additionally, it would be a mistake to focus exclusively on new gTLDs. Indeed, there are cases of cybersquatting that are not so old (eg D2016-2310, International Federation of Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong, January 24, 2017, fifa.net; D2014-0013, Professional Football League (LFP) against Hartout Mourad, March 3, 2014, league1.biz; D2014-1115, Liga Nacional de Futbol Profesional v. Ondrej Pastirik, Pro Region Slovakia, August 11, 2014, laliga.com).

Internationalized domain names. In addition, notwithstanding the extension, account must be taken of internationalized domain names (D2017-1308, Futbol Club Barcelona v. Javier Garcia de Leániz, September 25, 2017, barça.com).

brandTLD. Finally, remember that brand owners have the opportunity to acquire their own extension (.NIKE).

About IP Twins

IP Twins is an ICANN-accredited domain name registrar with 15 years of experience in domain name strategy and management. We represent trademark holders in UDRP proceedings.

We deliver security certificates tailored to your needs in order to ensure the safety of visitors to your website.

IP Twins also offers anti-counterfeiting and anti-cybersquatting monitoring services. Detective, our monitoring software, identifies online counterfeits and cybersquatting. We collect evidence and remove references to counterfeits from hundreds of marketplaces, social networks and the web in general.

Should you need to complete these investigations, our team based in China can help.

Do not hesitate to contact us.